SECTOR 9, INCORPORATED v. Hong Yunju
Claim
Number: FA0504000467853
Complainant is SECTOR 9, INCORPORATED (“Complainant”),
represented by
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <sectornine.com>, registered with Hangang
Systems, Inc. d/b/a Doregi.com.
The
undersigned certifies that he has acted independently and impartially and to
the best of his knowledge has no known conflict in serving as Panelist in this
proceeding.
Louis
E. Condon as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on April
26, 2005; the National Arbitration Forum received a hard copy of the Complaint
on May 2, 2005. The Complaint was
submitted in both Korean and English.
On
May 9, 2005, Hangang Systems, Inc. d/b/a Doregi.com confirmed by e-mail to the
National Arbitration Forum that the domain name <sectornine.com>
is registered with Hangang Systems, Inc. d/b/a Doregi.com and that Respondent
is the current registrant of the name. Hangang
Systems, Inc. d/b/a Doregi.com has verified that Respondent is bound by the Hangang
Systems, Inc. d/b/a Doregi.com registration agreement and has thereby agreed to
resolve domain-name disputes brought by third parties in accordance with
ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On
May 23, 2005, a Korean language Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of June 13, 2005 by which Respondent could file a Response to the
Complaint, was transmitted to Respondent via e-mail, post and fax, to all
entities and persons listed on Respondent's registration as technical,
administrative and billing contacts, and to postmaster@sectornine.com by
e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
June 16, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Louis E. Condon
as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration Forum has discharged its
responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (the "Rules") "to employ reasonably
available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision
based on the documents submitted and in accordance with the ICANN Policy, ICANN
Rules, the National Arbitration Forum's Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without the benefit of any
Response from Respondent.
Pursuant
to Rule 11(a) the Panel determines that the language requirement has been
satisfied through the Korean language Complaint and Commencement Notification
and, absent a Response, determines that the remainder of the proceedings may be
conducted in English.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <sectornine.com>
domain name is confusingly similar to Complainant’s SECTOR 9 mark.
2. Respondent does not have any rights or
legitimate interests in the <sectornine.com> domain name.
3. Respondent registered and used the <sectornine.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Sector 9, Incorporated, manufactures, distributes and sells skateboards,
longboards, wheels, clothing, stickers and other skateboard related goods. Complainant has used the SECTOR 9 mark in
connection with the sale of its skateboards and skateboard-related products for
fifteen years.
Complainant has
registered its SECTOR 9 mark with the United States Patent and Trademark Office
(“USPTO”) (Reg. No. 2,139,267 issued February 24, 1998).
Respondent
registered the <sectornine.com> domain name on June 1, 2001. Respondent’s domain name resolves to a
website that features sexually explicit advertisements and numerous links to
other adult-oriented websites.
Paragraph 15(a)
of the Rules instructs this Panel to "decide a complaint on the basis of
the statements and documents submitted in accordance with the Policy, these
Rules and any rules and principles of law that it deems applicable."
In view of
Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to paragraph 14(b) of
the Rules.
Paragraph 4(a)
of the Policy requires that Complainant must prove each of the following three
elements to obtain an order that a domain name should be cancelled or
transferred:
(1) the domain name registered by Respondent
is identical or confusingly similar to a trademark or service mark in which
Complainant has rights; and
(2) Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered and
is being used in bad faith.
Complainant has
established rights in the SECTOR 9 mark through registration of the mark with
the USPTO. See Men’s Wearhouse, Inc.
v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark
law, registered marks hold a presumption that they are inherently distinctive
and have acquired secondary meaning.”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7,
2001) (finding that the Policy does not require that the mark be registered in
the country in which the respondent operates and that it is sufficient that the
complainant can demonstrate a mark in some jurisdiction).
Respondent’s <sectornine.com>
domain name is phonetically identical to Complainant’s SECTOR 9 mark, and thus
confusingly similar to the mark.
Respondent’s domain name spells out the numeral “9” in Complainant’s
SECTOR 9 mark. Such minor change is
insufficient to negate a finding of confusing similarity between the domain
name and Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Hewlett-Packard Co. v. Cupcake City, FA 93562 (Nat. Arb. Forum Apr.
7, 2000) (finding that a domain name which is phonetically identical to the
complainant’s mark satisfies ¶ 4(a)(i) of the Policy); see also YAHOO! Inc. v. Murray, D2000-1013 (WIPO
Nov. 17, 2000) (finding that the domain name <yawho.com> is confusingly
similar to the complainant’s YAHOO mark).
Furthermore,
Respondent’s addition of the generic top-level domain “.com” and omission of
the space between the terms of Complainant’s mark does nothing to distinguish
the domain from the mark pursuant to Policy ¶ 4(a)(i). See Isleworth Land Co. v. Lost in Space,
SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding it is a “well established principle
that generic top-level domains are irrelevant when conducting a Policy ¶
4(a)(i) analysis”); see also Hannover
Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001)
(finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are
impermissible in domain names and a generic top-level domain such as ‘.com’ or
‘.net’ is required in domain names”).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent
failed to respond to the Complaint.
Therefore, the Panel may accept all reasonable assertions set forth by
Complainant as true and accurate. See
Talk City, Inc. v. Robertson,
D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is
appropriate to accept as true all allegations of the Complaint.”); see also
Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure
of a respondent to come forward to [contest complainant’s allegations] is
tantamount to admitting the truth of complainant’s assertion in this regard.”).
Complainant
asserts that Respondent lacks rights and legitimate interests in the <sectornine.com>
domain name and Respondent, in not replying to the Complaint, has failed to
rebut Complainant’s assertions.
Therefore, the Panel finds that Respondent’s failure to respond may be
interpreted as evidence that Respondent lacks rights and legitimate interests
in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000)
(finding that by not submitting a response, the respondent has failed to invoke
any circumstance which could demonstrate any rights or legitimate interests in
the domain name); see also Geocities
v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that the
respondent has no rights or legitimate interests in the domain name because the
respondent never submitted a response or provided the Panel with evidence to
suggest otherwise).
Respondent is
using the confusingly similar domain name to operate a website that features
sexually explicit advertisements and numerous links to various adult-oriented
websites, from which Respondent presumably earns referral fees. Such diversionary use of the domain name is
not a use in connection with a bona fide offering of goods or services pursuant
to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to
Policy ¶ 4(c)(iii). See
WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12,
2003) (finding that the respondent’s use of the disputed domain name to redirect
Internet users to websites unrelated to the complainant’s mark, websites where
the respondent presumably receives a referral fee for each misdirected Internet
user, was not a bona fide offering of goods or services as contemplated by the
Policy); see also Disney
Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003)
(finding that the respondent’s diversionary use of the complainant’s mark to
attract Internet users to its own website, which contained a series of
hyperlinks to unrelated websites, was neither a bona fide offering of goods or
services nor a legitimate noncommercial or fair use of the disputed domain
names).
Furthermore, the
fact that Respondent’s domain name resolves to a website that features sexually
explicit advertisements and links to other adult-oriented websites is evidence
that Respondent lacks rights and legitimate interests in the <sectornine.com>
domain name pursuant to Policy ¶ 4(a)(ii).
See ABB Asea Brown Boveri Ltd. v. Quicknet, D2003-0215
(WIPO May 26, 2003) (stating that the fact that the “use of the disputed domain
name in connection with pornographic images and links tarnishes and dilutes
[the complainant’s mark]” was evidence that the respondent had no rights or
legitimate interests in the disputed domain name); see also MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11,
2000) (finding that it is not a bona fide offering of goods or services to use
a domain name for commercial gain by attracting Internet users to third party
sites offering sexually explicit and pornographic material where such use is
calculated to mislead consumers and to tarnish the complainant’s mark).
Moreover,
nothing in the record indicates that Respondent is either commonly known by the
disputed domain name or authorized to register domain names that are
phonetically identical to Complainant’s SECTOR 9 mark. Therefore, the Panel finds that Respondent
has not established rights or legitimate interests in the <sectornine.com>
domain name pursuant to Policy ¶ 4(c)(ii).
See Tercent Inc.
v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in the
respondent’s WHOIS information implies that the respondent is ‘commonly known
by’ the disputed domain name” as one factor in determining that Policy ¶
4(c)(ii) does not apply); see also Compagnie de Saint Gobain
v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests
where the respondent was not commonly known by the mark and never applied for a
license or permission from the complainant to use the trademarked name).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
The Panel infers
that Respondent receives click-through fees for diverting Internet users to
various adult-oriented websites in addition to the advertising fees Respondent
receives through the prominent placement of sexually explicit advertisements on
its website. Because Respondent’s
domain name is confusingly similar to Complainant’s mark, Internet users
accessing Respondent’s domain name may become confused as to Complainant’s
affiliation with the resulting website.
Thus, Respondent’s commercial use of the <sectornine.com>
domain name constitutes bad faith registration and use pursuant to Policy ¶
4(b)(iv). See G.D. Searle & Co.
v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding
that the respondent registered and used the domain name in bad faith pursuant
to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar
domain name to attract Internet users to its commercial website); see also Qwest
Commc’ns Int’l Inc. v. Ling Shun Shing, FA
187431 (Nat. Arb. Forum Oct. 6, 2003) (“Respondent's
attempt to commercially benefit from the misleading domain name is evidence of
bad faith pursuant to Policy ¶ 4(b)(iv).”).
Furthermore, the
fact that Respondent’s domain name resolves to a website that features sexually
explicit advertisements and links to other adult-oriented websites is evidence
that Respondent registered and used the <sectornine.com> domain
name in bad faith pursuant to Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Party Night Inc., FA 144647
(Nat. Arb. Forum Mar. 18, 2003) (finding that the
respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence
that the domain names were being used in bad faith); see also Geocities v. Geociites.com, D2000-0326
(WIPO June 19, 2000) (finding bad faith where the respondent linked the domain
name in question to websites displaying banner advertisements and pornographic
material).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Complainant
having established all three elements required under the ICANN Policy, the
Panel concludes that relief shoul be GRANTED.
Accordingly, it
is Ordered that the <sectornine.com> domain name be TRANSFERRED
from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: June 28, 2005
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